Trademarks

Startups, and even large established firms, create names for companies, products and services without considering the importance of obtaining a trademark from the United States Patent and Trademark Office (USPTO). Registering a trademark is simple, low-cost, and straightforward. And yet, firms often fail to take this important first step when rolling out a product or service. Marching into production or announcing a service without registering a trademark for the product or service name can have large, costly dollar negative results.

One result can be that another company owns the trademark and that the product and packaging will require a new mark. The failure to make this determination early can require re-branding the product, creating confusion with customers with the name change, losing advertising dollars with the first name, and destroying product and material containing the conflicting brand.

Another negative result is that the unregistered mark was unique but that another firm registers the same mark after the unregistered mark started to be used. This conflict can result in costly administrative litigation before the USPTO Trademark Trial and Appeal Board. The results of such a trial are never certain and, while pending, will create uncertainty in the use of the mark.

One good example, this week, of a conflict involving the use of a trademark was Lucasfilm LTD LLC suing Lightsaber Academy, Inc. and others for the unauthorized use of several marks including "Lightsaber" and "Jedi". See the article in the NYT.

Firms should always contact an attorney before using a new mark. Registering the brand will create future value and create confidence in the use of the brand.